[Federal Register Volume 73, Number 142 (Wednesday, July 23, 2008)]
[Notices]
[Page 42781]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: E8-16830]
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DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
[Docket No.: PTO-P-2008-0024]
Scope of Foreign Filing Licenses
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Notice.
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SUMMARY: Applicants and registered patent practitioners are reminded
that the export of subject matter abroad pursuant to a license from the
United States Patent and Trademark Office (USPTO), such as a foreign
filing license, is limited to purposes related to the filing of foreign
patent applications. Applicants who are considering exporting subject
matter abroad for the preparation of patent applications to be filed in
the United States should contact the Bureau of Industry and Security
(BIS) at the Department of Commerce for the appropriate clearances.
DATES: Effective Date: July 23, 2008.
FOR FURTHER INFORMATION CONTACT: Mike Carone, Supervisory Patent
Examiner, Technology Center 3600, by telephone at (571) 272-6873.
SUPPLEMENTARY INFORMATION: The USPTO has become aware that a number of
law firms or service provider companies located in foreign countries
are sending solicitations to U.S. registered patent practitioners
offering their services in connection with the preparation of patent
applications to be filed in the United States. Applicants and
registered patent practitioners are reminded that the export of subject
matter abroad pursuant to a license from the USPTO, such as a foreign
filing license, is limited to purposes related to the filing of foreign
patent applications. Applicants who are considering exporting subject
matter abroad for the preparation of patent applications to be filed in
the United States should contact the Bureau of Industry and Security
(BIS) at the Department of Commerce for the appropriate clearances. See
MPEP Sec. 140 (8th ed., Rev. 5, Aug. 2006). The BIS has promulgated
the Export Administration Regulations (EAR) governing exports of dual-
use commodities, software, and technology, including technical data,
which are codified at 15 CFR Parts 730-774. Furthermore, if the
invention was made in the United States, technical data in the form of
a patent application, or in any form, can only be exported for purposes
related to the preparation, filing or possible filing and prosecution
of a foreign patent application, after compliance with the EAR or
following the appropriate USPTO foreign filing license procedure. See
37 CFR 5.11(c). A foreign filing license from the USPTO does not
authorize the exporting of subject matter abroad for the preparation of
patent applications to be filed in the United States.
The Commissioner for Patents has been delegated the authority for
controlling exports of technology for purposes of the filing of patent
applications in foreign countries. See 15 CFR 734.3(b)(1)(v) and
734.10(b) and 35 U.S.C. 184. The USPTO grants foreign filing licenses
in accordance with USPTO regulations. See 37 CFR Part 5. The scope of a
foreign filing license granted by the USPTO is set forth in 37 CFR
5.15. Applicants and registered patent practitioners are also advised
that foreign filing licenses (for the filing of a patent application in
a foreign country) do not authorize the export of any technology that
is not specifically submitted to the USPTO as part of a U.S. patent
application or a petition for a foreign filing license. For example,
the USPTO has received short abstracts, PowerPoint[supreg] slides and
even titles of inventions as the disclosure for which a foreign filing
license is requested. Although the USPTO will usually process such
requests, any foreign filing license granted under 37 CFR 5.15(a) or
5.15(b) on such short description may not authorize filing abroad the
ultimate resulting patent applications and may not authorize any
additional material added after the initial foreign filing license
request. Such additional material that was not submitted to the USPTO
for its review may be deemed to have altered ``the general nature of
the invention in a manner which would require such application to be
made available for inspection under such section 181.'' See 35 U.S.C.
184. The USPTO has established a Licensing and Review Web page on its
Web site that includes frequently asked questions regarding foreign
filing licenses and related matters. This Web page is located at http://www.uspto.gov/web/offices/pac/dapp/opla/lr/licensing_review.htm.
This notice does not change existing law or regulations. Thus,
while the notice is effective on July 23, 2008, this notice does not
excuse or otherwise affect the legal consequence of a failure to comply
with existing law or regulations that occurred prior to July 23, 2008.
Information regarding the EAR may be obtained from the BIS Web site
at http://www.bis.doc.gov. Questions regarding the EAR should be
directed to the BIS's Outreach and Educational Services Division at
(202) 482-4811.
Dated: July 16, 2008.
Jon W. Dudas,
Under Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office.
[FR Doc. E8-16830 Filed 7-22-08; 8:45 am]
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